DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 16 is objected to because of the following informalities: The claim was amended to state “the structural formulae of which formulae of which can be shown as follows:” and it’ suggested that this red –the structural formula can be shown a follows-. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 16 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 16 recites the broad recitation wherein the at least one chemical compound comprises at least one of Isopropyl triisostearoyl titanate, Isopropyl tri(dioctyl)phosphate titanate, Isopropyl tri(N-ethylenediamine) ethyl titanate, and Neopenty(diallyhoxy-tri(dioctyl)phosphate zirconate, and the claim the chemical also recites the structural formulae of which formulae of which can be shown as follows:
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which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The be specific, the formula shown only accounts for Isopropyl triisostearoyl titanate, and not the other three, and that formula isn’t for the other three compounds, so thus while the at least one Isopropyl triisostearoyl titanate is clearly claimed, at least one of Isopropyl triisostearoyl titanate, Isopropyl tri(dioctyl)phosphate titanate, Isopropyl tri(N-ethylenediamine) ethyl titanate, and Neopenty(diallyhoxy-tri(dioctyl)phosphate zirconate is not.
Response to Arguments
Applicant’s arguments with respect to claim(s) 16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. In an attempt to provide as compact prosecution as possible, the claims were amended such that claim 16 is the only claim pending in the application. Claim 16 was amended such that a specific chemical compound with a specific structure is claimed. While the prior art of record cited thus far does not specifically mention the specific compound with the specific structural formula, the claim as amended does not quite make clear the metes and bounds of the claim as it only accounts for the one compound versus the possible four that are claimed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY T FRANK whose telephone number is (571)272-2193. The examiner can normally be reached M-F 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at (571) 272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RODNEY T. FRANK
Examiner
Art Unit 2855
/PETER J MACCHIAROLO/Supervisory Patent Examiner, Art Unit 2855
November 11, 2025